Canadian Trademark Blog

Maintained by Clark Wilson LLP

David, Goliath And Reverse Confusion

By In Branding, Protection & Enforcement

Microsoft is once again at the forefront of a trademark infringement dispute , though this time the David in the story is on a bit weaker ground – it sells construction management software under the FOREFRONT brand and MS recently announced it will begin selling security software under that same brand – so clearly the claimed goods are different, but the marks are identical and there could be overlap in the channels of trade. Reading between the lines, the earlier user here is worried about reverse confusion, which occurs where a later user floods the market with its brand, subsuming the earlier user’s more modest reputation.

Though an established cause of action in the U.S., it’s only recently been recognized as being actionable in one Canadian case – however, in that case the A&W fast food chain was unable, on the facts, to prove that it had a cause of action against McDonalds in a battle of their respective CHICKEN GRILL and CHICKEN McGRILL sandwiches.

Recent Case Law

By In Case Law, Protection & Enforcement

Summer is a quiet time for the Canadian courts. Looking back at July and August, there are three decisions that deserve a brief summary:

In Ratiopharm Inc. v. Laboratories Riva Inc., the Federal Court dismissed the plaintiff’s action alleging infringement of its registered Canadian trade-mark. The plaintiff sold a codeine based cough syrup under the mark CALMYLIN, while the defendant sold a similar codeine based product under the mark DAMYLIN. At trial there were two issues to be heard: (1) Did the plaintiff have standing to sue? and (2) Is DAMYLIN likely to be confused with CAMYLIN within the meaning of section 20 of the Trade-marks Act? With regards to standing, the court held that the license requirements of the Trade-marks Act had been satisfied and as such and the plaintiff had standing to commence an action for trade-mark infringement. With regards to the issue of confusion, the court held that there was no likelihood of confusion between CAMYLIN and DAMYLIN in the mind of the average consumer, even if hurried. The plaintiff’s action for trade-mark infringement was dismissed.

In DJang v. Ji, a decision of the British Columbia Supreme Court, the plaintiffs sought an interlocutory injunction restraining the defendants from marketing certain herbal products under names for which the plaintiffs had registered Canadian trade-marks. The plaintiffs also alleged passing off and a breach of the British Columbia Trade Practice Act. The Court applied a two-pronged test for granting interlocutory injunctions, holding that while there was a fair question to be tried, the balance of justice and convenience did not favour the injunctive relief sought by the plaintiffs since there was no convincing evidence of the totality of factors to establish irreparable harm. In the end, the Court declined to grant the interlocutory injunction.

Tradition Fine Foods Ltd. v. Group Tradition’l Inc., was an appeal to the Federal Court from a decision of the Trade-marks Opposition Board (the “Board”). The Board had rejected the applicant’s opposition to the respondent’s registration of BAGEL TRADITION’L and design. Upon reviewing the Board’s decision, the Court held that it was open to the Board to dismiss the applicant’s opposition on the ground of confusion. The Court found there to be almost no points of resemblance between the applicant’s TRADITION and TRADITION FINE FOODS trade-marks and the respondent’s proposed trade-mark when the trade-marks were considered in their totality. In the Court’s view, the Board had properly considered all the factors set out in subsection 6(5) of the Trade-marks Act. The Court further held that the applicant had not met its burden of proving that the word “TRADITION’L” or the imagery of the bagel and wheat sheaves was clearly descriptive of the intrinsic quality of bagels.

Branding Canada: Official Marks

By In Branding

Noting an August 15th post on the Strategic Name Development Blog, which comments that Canada is a great brand but it needs marketing.

While we appreciate that trade-mark registration is only a small part of an overall branding and marketing campaign, it appears from the Canadian Trade-mark Register that the government organizations responsible for promoting tourism in Canada and its provinces and territories are taking steps towards developing a brand. For example, Tourism BC has a number of marks on the Canadian Trade-mark Register, including a number of variations of SUPER NATURAL BRITISH COLUMBIA. The Greater Vancouver Convention and Visitors Bureau has obtained 100 DAYS OF SUMMER, along with a number of other marks.

Other favourites include: Nunavut’s UNTAMED UNSPOILED UNDISCOVERED (which is not on the Trade-mark Register, however); Saskatchewan’s LAND OF LIVING SKIES; and Quebec’s PROVIDING EMOTIONS SINCE 1534 (FOURNISSEUR D’ÉMOTIONS DEPUIS 1534, if you prefer the French).

With the exception of UNTAMED UNSPOILED AND UNDISCOVERED, all these marks are registered as “Official Marks” under section 9(1)(n)(iii) of Canada’s Trade-marks Act, a provision that gives these “public authorities” an advantage over the average commercial enterprise seeking to register trade-marks. Registration of such marks does not involve an opposition process and does not require renewal. There are no fees to pay and no provisions regarding cancellation. The public authority may prohibit others from using the mark with all goods and services and not just those in respect of which the public authority can establish use. (For more details on official marks generally see this.) Government entities do not always resort to section 9(1)(n)(iii). The Canadian Tourism Commission has obtained Official Mark status for PURE CANADA and CANADA PUR, but has registered THE WORLD NEEDS MORE CANADA & Design as an ordinary trade-mark.

Given section 9, it is perhaps surprising that Canadians, and more particularly their public authorities, are not more aggressive about establishing brands, or at least trade-marks. We are still waiting for something as provocative as Australia’s SO WHERE THE BLOODY HELL ARE YOU?, or better yet, Las Vegas’ WHAT HAPPENS HERE, STAYS HERE.

Only in Canada? .CA Whois Policy will create more uncertainty for Trade-mark owners

By In Domain Name Disputes, Protection & Enforcement

Still catching up on press releases received over the last few weeks. The Canadian Internet Registration Authority (“CIRA”) is pushing ahead with implementation of its new Whois Policy despite resistance from trade-mark owners and other IP rights holders. Once implemented (likely in late fall of 2006), an individual Registrant of a .CA domain name will be able to cloak their identity unless they opt to disclose it. This is so, even if the .CA domain name links to a commercial website. Disclosure can be forced only in certain limited circumstances, pursuant to a court order, search warrant and the like.

Trade-mark or other IP rights owners who believe an individual Registrant is cybersquatting or otherwise infringing their rights will have no way to find out who that individual is, to contact them directly to try to work out a settlement or to properly assess the likelihood of a successful dispute resolution proceeding (called a CDRP proceeding). CIRA have rejected their own Consultant’s recommendation that CDRP Complainants should have access to the identity of an individual Registrant, subject to various safeguards.  CIRA’s suggested solution is to permit a Complainant to file rebuttal evidence on the issue of legitimate interest, in response to the evidence, if any, filed by an individual Registrant on that issue. Filing additional evidence on the issue of bad faith will require permission of the dispute resolution panel.

A potential Complainant under this new system will have a risky and expensive decision to make – whether to commence a CDRP proceeding without a crucial piece of information – the identity of the individual Registrant – and risk finding out only after the Registrant files his or her evidence (this requires that the Complainant first submit its Complaint and evidence and incur the fees inherent in doing so) that he or she indeed has a legitimate interest in the domain name – which if the Complainant had known from the outset, the CDRP might have been avoided altogether.

Interesting to note that CIRA’s new Whois policy doesn’t contain the commercial purpose exception that applies to .co.uk domain names, which permits Nominet to release the Whois details even if the Registrant is an individual – not to mention that it’s also an opt out system.

In a related development, CIRA is currently seeking public input on how to implement its new Whois policy and is seeking to hire a consultant to complete a review of the CDRP process and recommend options for change.

Branding Blogs List

By In Branding

One of the trends that we intend to track is how trade-marks fit within the brand development process. To that end, we’ve created the list below to help explore the branding blogosphere. Do you have, or know of, a great blog that’s missing? Let us know by sending a note to Larry Munn.

Branding Blogs List: